UDRP and URS for NGOs and IGOs September 2014 Presented By National Arbitration Forum

Questions Presented NAF’s experience with the URS NAF’s experience (if any) with IGO and INGO filings Thoughts on whether amending the UDRP and/or URS will solve: any jurisdictional problem for IGOs the need to own a TM for both IGOs and INGOs

NAF’S EXPERIENCE WITH THE URS

URS Statistics 130 cases 153 domain names 111 cases went to Determination so far 101 Suspensions 16 Denials 1 split Total doesn’t add up because some cases have more than one Determination. Approximately half of the cases had a response (UDRP is about 30%, generously).

URS Observations URS replicates much of the UDRP substantively Adds additional “codification” around complainant’s rights Adds additional “codification” around respondent’s defenses and other considerations Examiners are generally experienced UDRP panelists, with a few additions to accommodate language needs. Examiners are relying on UDRP knowledge and experience and turning to UDRP when there are questions. Examiners are serious about clear and convincing evidence standard.

URS Observations No findings of abuse or material falsehood to date. Most Examiner Determinations appear to fall within the metes and bounds of the policy, are supported by the case documents, and are tolerably reasoned (URS permits a “summary determination”). No overt “Examiner got it wrong” cases yet; a few grey areas; clearly Examiners are split on Yoyo. ’s legitimacy/permissibility.

URS Noteworthy Outcomes In most cases, the cybersquatting was clear—the brand was well known, and there was (in UDRP parlance) “no conceivable good faith use.” Losses tended to occur because: The domain was such that the Examiner required actual bad faith use, not just “no conceivable good faith use.” That is to say, the brand owner brought the dispute too soon. Complainant didn’t establish that *it* owned the mark

NAF’S EXPERIENCE WITH NGO/IGO FILINGS

Reliance on something other than a TM (under UDRP) Parties that have relied on protections other than a TM: Red Cross (15 cases, 31 domain names—one loss) “RedCrossMafia” was not confusingly similar International Olympic Committee (18 cases, 31 domain names—100% success rate) National Rifle Association (2 cases, 4 domain names—100% success rate) *American Veterans (AMVETS) (2 cases, 4 domain names—100% success rate) *United States Postal Service (14 cases, 49 domains—two losses early on—100% success since 2001) *Civic Non-Partisan Association a/k/a the Vancouver Civic Non-Partisan Association (1 case, 1 domain name, granted) *Not IGOs nor on the ECOSOC list of INGOs.

NAF’s Observations w/r/t NGO filings (UDRP) Complainant’s rights Most Panels treat UDRP 4(a)(i) as a standing issue, but don’t require federal registrations. Treaties and statutes are accepted Common law rights accepted Rarely, ITU applications accepted Rarely, articles of incorporation or d/b/a’s accepted Issues of competing rights, innocent registration, predating, etc are almost always discussed under Policy para 4(a)(ii) and/or 4(a)(iii).

THOUGHTS ON THE PROBLEMS TO BE SOLVED

Jurisdictional Problems for IGOs All gTLD registration agreements specify a jurisdiction; UDRP/URS mutual jurisdiction just echoes that. Providers do a check for mutual jurisdiction election. Amending Policies to say IGOs/NGOs do not need to comply would mean that every time a party wanted the jurisdiction waiver, the case would need to be reviewed by legal counsel. Does not increase efficiency or case processing accuracy. URS automates the check.

Necessity of NGO’s to own a TM As shown, there are many bases by which a party can obtain rights, including statutory or by treaty. URS codifies the UDRP practice Questions that come to my mind: Are NGOs concerned about absolute control over all acronyms (acronym cases are frequently denied) Are all NGOs created equal (such that Panelists can be trained/provided with lists, etc)

Final Thoughts on a New Policy v. Amending the UDRP Amendments will cause significant hassle Most parties aren’t sophisticated enough to figure out when exceptions apply to them. Panelist training on a broad scale for “incidental” occurences is prohibitive Providers manage many UDRP-like Policies and one more is no big deal. Parties and Panelists are already in an “alternate flow” identified for potential issues.